The Singapore Patents Act (SPA) conveniently provides applicants with a choice of patent prosecution procedures to obtain a grant of a patent. The options available are generally referred to as slow track or fast track options.
Under the slow track option, the applicant may elect “local” search and examination at the Intellectual Property Office of Singapore (IPOS) and the applicant receives a search and examination report issued by IPOS.
Under the fast track option, the applicant forgoes local search and examination procedures of the slow track route and relies instead upon the search and examination results of a corresponding international application under the Patent Cooperation Treaty (PCT) or a corresponding application that has been granted or allowed in the following eight countries (as prescribed by Rule 41 SPA): Australia, Canada, Europe, Japan, New Zealand, South Korea, United Kingdom, or United States. The procedure under the fast track is attractive to many applicants in Singapore since it streamlines the prosecution process and prevents duplication of prosecution efforts in multiple jurisdictions.
There is however an issue that arises should an applicant wish to rely on a corresponding New Zealand patent. A requirement for grant of a patent in Singapore under Section 30(3)(c)(ii) SPA is that each of the claims proceeding to grant in Singapore must be related to at least one claim in the corresponding application that has been examined to determine whether the claim appears to satisfy the criteria of novelty, inventive step (or non-obviousness) and industrial applicability (or utility). In New Zealand the Intellectual Property Office of New Zealand (IPONZ) grants patents without examining the claims for inventive step or non-obviousness. Although applicants in Singapore may procedurally rely on a granted New Zealand patent as prescribed pursuant Rule 41 SPA, arguably the requirements of Section 30 SPA may not have been satisfied. This may result in the granted Singapore patent being invalid, and may leave the Singapore patent subject to revocation proceedings in Singapore.
There are reports out of New Zealand that a new Patents Bill which proposes extending patent examination to include evaluation of absolute novelty and inventive step looks likely to replace the existing New Zealand Patents Act within the next year. Until then, applicants in Singapore should continue to refrain from relying on a granted New Zealand patent under the fast track option. Instead, applicants should consider the slow track option, or rely on a corresponding patent from another jurisdiction under the fast track option.